Patent Office, according to the defendant's preference, or a master to be appointed to inspect defendant's machine at its factory and furnish a report to the court."

16 A pending application of a defendant is not privileged.

Edison Electric Light Co. vs. United States Electric Lighting Co., 44 Fed. 294.

An

In that case plaintiff had a pending divisional application. ambiguity appeared in the patent sued on capable of two meanings and the defendant claimed that the divisional application explained these matters and greatly restricted the claims of the patent in suit. It was ordered that the subpœna duces tecum be obeyed.

ENGLISH PRACTICE.

Communications between an applicant and his patent agent are not

privileged.

Mosely vs. Victoria Rubber Co. (1886), 3 R. P. C. 351. An English case similar in its facts to E. N. Rowell Co. vs. William Koehl Co., is that of

Bovill vs. Moore, 2 Coop. Ch. R. 46 (reported in Dav. Pat. Cas. 361, 402),

involving a machine for making bobbin lace. There Lord Elton said:

"Now the manufactory of the defendant is carried on in secret. The machine which the defendant uses to make bobbin lace, and which the plaintiff alleges to be a piracy of his invention, is in the defendant's own possession, and no one can have access to it without his permission. The evidence of the piracy, at present, is the bobbin lace made by the defendant. The witnesses say that this lace must have been manufactured by the plaintiff's machine, or by a machine similar to it in principle. This is obviously in a great measure conjecture. No court can be content with evidence of this description. There must be an order that plaintiff's witnesses shall be permitted before the trial of the action to inspect the defendant's machine, and to see it work."

Other instances of inspection under the English practice will be shown in the following:

Smith vs. Edlin-Sinclair Type Co., 20 R. P. C., 435.
Russell vs. Crichton, 1 Web. Pc. 667.

Batley vs. Kynoch, L. R. 19 at p. Eq. 92.

Flower vs. Lloyd, W. N. 169, 230.

A now famous order of inspection is that relating to the Keely motor in the case of

Wilson vs. Keely, 43 O. G. 511.

The true theory of inspection appears to be well set out in the case of Dobson vs. Graham, 49 Fed. 17,

where the court said:

"If it were shown that these secrets are used as a cloak to cover an invasion of the plaintiff's rights, or if there was reliable evidence tending to show it to justify the belief that they are sound, the motions would be sustained."

This order, it is noted, did not say that this should be done in

camera.

In the later reported case of

Eibel Process Co. vs. Remington-Martin Co., 197 Fed. 760, (1912), Judge Ray expressly disapproved of Judge Hazel's opinion in the Rowell case, and held that "suspicion" of infringement is not enough to justify such an order. Judge Ray pointed out that a motion was premature until a prima facie case has been made out by taking testimony and concealment by defendant of its alleged infringing devices or of plans, drawings and documents. Dobson vs. Graham, 49 Fed. 17.

Diamond Match Co. vs. Oshkosh Match Co., 63 Fed. 984. Judge Ray correctly points out that it is a serious thing to direct a manufacturing corporation to allow the attorney and patentees and experts of a rival concern to enter its plant and inspect and measure its machinery, and the operation thereof, and compel it to furnish samples of its stock and product. But he failed to point out that, on the other hand, from a plaintiff's point of view, inspection is often essential under modern manufacturing conditions where it is almost impossible for a patentee to obtain access to a rival's factory and prove, with any degree of exactness, what type of machinery or processes are being employed, although the patentee may have ample legitimate reasons for believing that his patented device or process is being wrongfully employed."

Just how far, under the new rules, courts will require the answering of interrogatories inquiring into the doings of a defendant remains yet to be determined.

17 In England generally the plea of a defendant that his process is secret does not avail him against answering interrogatories.

Rennard vs. Levenstein, 1864, 3 N. R. 665, 10 T. L. M. S. 94.
Ashworth vs. Roberts, 1890, 7 R. P. C. 455.

In order, however, to obtain an inspection of a supposed infringing machine not only must a prima facie case be made out, but where the thing or process inspected is secret the inspection will be granted to scientific witnesses who will be required to keep any secrets which they may have discovered and do not affect the question of infringement; the court frequently limiting the inspection to scientific men and excluding the plaintiff from being present.

Flower vs. Lloyd, 1876, W. N. 169, 230.

Swan vs. Edlin-Sinclair Tyre Co., 1903, 20 R. P. C. 435.

In a case in the Ninth Circuit.

International Steam F'ump Co. vs. Dow Pump & Diesel Engine Co.,

Judge Van Fleet, in an unreported memorandum opinion, sustained defendant's objections to interrogatories directed by plaintiff, asking defendant whether or not it had made or sold any pumps corresponding to a blue-print attached to the interrogatories. Defendant's objections were made particularly on the grounds given in Judge Ray's opinion; also that there was no showing of any lack of knowledge on the part of plaintiff to the facts sought to be discovered or any concealment of any acts, or any secret action by the defendant; that the bill was verified and alleged categorically and not on information and belief, the facts on which plaintiff sought relief including the question of infringement; and that the proceedings were in the nature of a "fishing expedition "" to bolster up a suspected cause of action.

18

This right of inspection, however, does not prevent the protection of an honest trade secret, although with the privileges of the patent and copyright laws there can be few bona fide cases of trade secrets and courts should view them with disfavor, if not suspicion."

18 FISHING EXCURSIONS. Judge Lurton, in the case of Carpenter vs. Winn, supra, drew attention that "fishing bills" or bills in the nature of fishing excursions had always been abhorrent to equity. This is also the rule today in England, as seen by the answer of the Lord Chancellor to Mr. Justice Lurton's question relating to equity procedure in England:

"A fishing discovery, that is to say, discovery in order to enable the applicant to fish for a cause of action when he has no materials of his own, is disallowed. It must always be a matter of decision upon the circumstances in each case whether it is a fishing application or not."

19 As Mr. Wigmore in his work on Evidence points out:

....

In an epoch when patent rights and copyrights for invention are so easily obtained and so amply secured, there can be only an occasional need for the preservation of an honest trade secret without resort to public registration for its protection. Such instances do occur, but an object of the patent and copyright laws is to render them as rare as possible, and the presumption should be against their propriety. In other words, a person claiming that he needs to keep these things secret at all should be expected to make the exigency particularly plain. In the next place, the occasion for demanding such a privilege arises usually in actions where the party claiming it is as one charged with infringing the rights of another by fraudulent competition in business, and the existence of the fraud can be proved only by investigating the claimant's methods of business. In such cases it might amount practically to a legal sanction of the fraud if the

I opine that the rule will prevail in American practice similarly as applied by Judge Van Fleet.

PROCEEDINGS UNDER RULE 48.

In the matter of inquiry into prior use, Judge Dickinson in Todd vs. Whitaker made one pertinent observation which may save the Bench and Bar much worry about resorting to interrogatories and that was that proceedings under Rule 48 for the taking of depositions of experts would furnish all the information which could fairly be asked concerning an inspection of a prior use, and there would seldom be occasion to resort to interrogatories

court conceded to the alleged wrongdoer the privilege of keeping his doings secret from judicial investigation. No privilege at all should there be conceded, although as much privacy as possible might be presented by compelling disclosure no farther than to the judge himself, or to his delegated master, or auditor, if (as is usual) the cause is tried by chancery procedure. In other words, the privilege should be conceded in those cases only where the disclosure of the facts by the particular channel of the witness in question is but a subordinate means of proof, relative to the other evidence available in the case; for without some such limitation the general principle cannot be enforced that testimonial duty to the community is paramount to private interests, and that no man is to be denied the enforcement of his rights merely because another possesses the facts without which the right cannot be ascertained and enforced."

Wigmore Evidence, 1894, Vol. 3, Sec. 2212, pp. 3001 to 3002. The case of

E. I. du Pont de Nemours Powder Co vs. Masland et al., 222 Fed. 340 (Pa.),

presents an interesting and unusual case of discovery and trade secrets.

There the bill was filed to restrain defendants from disclosing trade secrets of plaintiff obtained by defendants as employees and confidentially communicated to them.

Defendant was given information as to what claimed secret processes were, the formula of which was kept in camera. The defendant stated that the so-called secrets of plaintiff were not secrets but old processes and which anyone had a right to use. Defendant then gave notice of an intention to employ experts to discuss with them the matter. This alarmed plaintiff who applied for a restraining order which was granted. Then witnesses for plaintiff were asked on crossexamination to state the formulæ embodying the secret processes, and the present motion to vacate was brought. The Judge said: "This difficulty could not be met by an appropriate order for keeping the answers to the questions asked in camera." The defendant was denied the right to disclose any information to their experts.

The ultimate disposition of this case will be awaited with interest.

in such matter. This is quite true if we but realized that under Rule 48 the plaintiff is merely required to make out his prima facie case as to infringement; assuming, of course, that the acts of infringement are within the knowledge of the plaintiff. The latter is not concerned for the time being with the defendant's prior uses; plaintiff does need to know the extent and character of the prior use in time to prepare intelligently for trial. But presumably the defendant's expert will of necessity in his affidavit, fully outline the nature and character of the prior use. Hence the plaintiff then has an opportunity before trial to make full answer thereto so that the danger of surprise that might otherwise be possible if the nature of the prior use were left until the time of the trial, may be wholly avoided by timely action taken by plaintiff to apply to have the case placed subject to Rule 48.

While Rule 48 is in no correct sense a discovery in the usual meaning of the word, yet by proceeding under it the need for discovery, as far as prior user is concerned, is in a large measure obviated. In other words, it is an insurance to the plaintiff against surprise at the trial and in that respect it is an effective discovery to him.

EQUITY RULES 25 and 30.

Likewise the rulings of certain of the courts under Rules 25 and 30 concerning the form and substance of bills and answers are in the line of discovery for one or the other of the parties. Here we see a further radical departure from the old practice and one whose possibilities have not yet fully been exploited or defined.

The only reported case in which this matter has been considered, bearing on the subject of discovery or further particulars against surprise is that of

Coulston et al. vs. H. Franke Steel Range Co., Inc., 221 Fed. 669 (March 8, 1915).

This was on a motion of plaintiff that the defendant be required to make its answer more definite and certain by setting forth in what respects each of the patents, pleaded in the answer as anticipations, discloses any of the elements or combinations of elements described in plaintiff's letters patent and in what respect they negative the novelty and invention of the device of the patent.